Ex Parte Abe et al

Patent Trial and Appeal Board

Jul 25, 2013

10513822 (P.T.A.B. Jul. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte FUMIYOSHI ABE, MITSUTOSHI SHINKAI,
TAKUJI MORIYA, KEN KIMURA, and KIRI JOBO
____________________

Appeal 2011-004632
Application 10/513,822
Technology Center 2400
____________________

Before: KALYAN K. DESHPANDE, DAVID M. KOHUT, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-004632
Application 10/513,822

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
2-4. We have jurisdiction under 35 U.S.C. § 6(b). We heard oral arguments
on July 9, 2013.
We affirm.

The claims are directed to a video image editing apparatus and
method, recording medium, and program. Claim 2, reproduced below, is
representative of the claimed subject matter:
2. A video-image editing apparatus comprising:
mark setting means for setting, in metadata related to
video content data for displaying an image including sound,
digital mark data indicating a feature of the image;
video display control means for controlling the display of
the image based on the video content data;
digital-mark display control means for controlling the
display of at least one of a temporal position of the image
having the feature indicated by the digital mark data and the
feature of the image based on the metadata in which the digital
mark data is set; and
configuration-table display control means for controlling
the display of a configuration table based on configuration-table
data related to the video content data.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Janevski US 6,988,245 B2 Jan. 17, 2006
Sai US 2002/0012526 A1 Jan. 31, 2002
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REJECTIONS
The Examiner rejected claims 2-4 under 35 U.S.C. § 103(a) as being
unpatentable over Sai and Janevski. Ans. 4.

ISSUE ON APPEAL
Based on Appellants’ arguments in the Appeal Brief (App. Br. 6-19)
and Reply Brief (Reply Br. 3-19), the dispositive issue presented on appeal
is whether the combination of Sai and Janevski teaches or suggests
controlling the display of a configuration table based on configuration-table
data related to the video content data (App. Br. 15-19).1

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions as to all rejections. We adopt as our own (1) the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken and (2) the reasons set forth by the Examiner in the Examiner’s
Answer in response to Appellants’ Appeal Brief. We concur with the
conclusions reached by the Examiner. For emphasis we highlight
Appellants’ arguments seriatim as they are presented in the Appeal Brief,
pages 6-19.
Appellants contend that, “[f]or the purposes of this Appeal, the
Decision on Petition of August 24, 2009 limits the scope and impact of

1 Appellants raise additional issues which, although not dispositive, are
addressed supra.
Appeal 2011-004632
Application 10/513,822

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Janevski.” App. Br. 14 (emphasis omitted). In particular, Appellants argue
that, because Janevski was included for showing elements initially found
based on Official Notice, the subsequent substitution of Janevski for Official
Notice limits its application to only those portions of Janevski then cited by
the Examiner and no more. App. Br. 15. For example, during oral hearing
Appellants argued that it would be improper to look to Janevski, col. 6, l. 67
– col. 7, l. 3, which was not cited by the Examiner, to obtain an
understanding of the videomarks described at Janevski col. 7, ll. 183-3. Oral
Hearing Transcript, at 15. We find these arguments unpersuasive of
Examiner error.
While Appellants argue that the disputed rejections may not rely on
portions of Janevski other than those cited by the Examiner (App. Br. 15;
Reply. Br. 7), they fail to show or even allege that the Examiner strayed
outside the cited portions in support of the rejections. Thus, this issue
appears moot. Furthermore we disagree with the substance of Appellants’
argument. Appellants provide no basis why the Board may not consider the
Janevski reference in its entirety including portions not specifically cited by
the Examiner.2 Furthermore, citing to a different portion of an applied
reference, which “goes no farther than, and merely elaborates upon, what is
taught by” the previously-cited portion of that reference relied upon by the
Examiner, does not constitute a new ground of rejection. See In re DBC, 545

2 See, e.g., In re Meinhardt, 392 F.2d 273, 280 (CCPA 1968) (“[I]t is proper
for the court and necessarily, the board, to consider everything that a
reference discloses.”); In re Hedges, 783 F.2d 1038, 1039 (Fed. Cir. 1986)
(citing In re Wesslau, 353 F.2d 238, 241 (CCPA 1965) (the reference is
considered in its entirety for what it fairly suggests to one skilled in the art)).

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F.3d 1373, 1382 n.5 (Fed. Cir. 2008). Therefore, Appellants’ contention is
not persuasive of Examiner error.
Appellants further contend that “Janevski fails to disclose, teach, or
suggest controlling the display of a configuration table based on
configuration-table data related to the video content data.” App. Br. 15
(emphasis omitted). Appellants argue that Figure 2 fails to depict, and the
other cited portions of Janevski fail to disclose, teach, or suggest
“controlling the display of a configuration table” (App. Br. 15-18) and, in
particular, “column 7, lines 18-33 of Janevski fails to disclose, teach, or
suggest ‘plurality of videomarks’ and ‘a configuration table’ as being one in
the same” (App. Br. 19 (emphasis omitted)). In response, the Examiner
finds that Janevski’s display of a videomark menu discloses display of the
claimed configuration table. In particular, the Examiner finds that:
the configuration-table [of claim 2] is based on configuration-
table data related to the video content data. The examiner
interprets the configuration-table data to be the “metadata in
which the digital mark data is set” compiled in a table format.
As recited in col. 7, lines 18-33 of Janevski, a videomark
controller receives user input by use of remote control device
(col. 4, lines 48-67) to display a videomark menu (i.e.
configuration-table).

Ans. 5.
We agree with the Examiner and find Appellants’ arguments
unpersuasive of error. Appellants’ Specification describes that “[a]
configuration table (program metadata) is formed of a planning layer, a
program layer, an episode layer, a scene layer, and a cut layer shown in Figs.
4, 11 through 66.” Spec. 23. Furthermore, according to Appellants’
Specification, metadata includes digital mark data: “metadata includes, for
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example, . . . digital mark data concerning video content data.” Id. Janevski
also describes that “a videomark may comprise a brief text that identifies the
type of event displayed within the video program at the location of the
videomark.” Janevski col. 7, ll. 1-3. Thus, Janevski’s videomarks are
metadata (including text) which, when displayed in a videomark menu (i.e.,
a configuration table, see Ans. 5), disclose displaying a configuration table
including configuration-table control means for controlling the display of the
table based on configuration-table data (e.g., metadata including
videomarks) related to the video content data (e.g., the data associated with
the metadata.). In contrast, other than quote the portions of Janevski cited
by the Examiner and contend that the disputed claim language is not therein
disclosed, Appellants’ provide insufficient evidence or argument addressing
the Examiner’s application of the prior art to persuade us of error of those
findings.3 Therefore, Appellants’ arguments are not persuasive of Examiner
error and we sustain the rejection of claim 2.
In connection with claim 3 Appellants make the naked contention that
“the Final Office Action fails to show the presence of method steps within
Sai.” App. Br. 19 (emphasis omitted). The Examiner responds that:
Paragraphs 0041-0046 and figure 4 of Sai et al. disclose the
method of setting a mark in metadata related to video content
data for displaying an image including sound, digital mark data
indicating a feature of the image; controlling the display of the
image base on the video content data; and controlling the
display of at least one of a temporal position of the image

3 See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the
Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.”).
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having the feature indicated by the digital mark data and the
feature of the image based on the metadata in which the digital
mark data is set.

Ans. 6.
We agree with the Examiner and find that the combination of Sai and
Janevski teaches or suggests the claimed method of claim 3 and sustain the
rejection of that claim.
Appellants further contend that “the Final Office Action fails to show
the presence of the claimed recording medium within Sai.” App. Br. 19
(emphasis omitted). The Examiner responds that “Sai et al. teaches a
recording medium in which a program for allowing a computer to execute
video-image editing processing is recorded (para. 0063).”4 Ans. 6. In the
absence of sufficient evidence or argument to the contrary, we agree with the
Examiner and sustain the rejection of claim 4.

4 Although the Examiner also finds that the recitation of a recording medium
is not to be given patentable weight because it appears only in the preamble
of the claim, we need not reach this issue as we agree with the Examiner that
Sai teaches or suggests the disputed recitation.
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CONCLUSION
We find Appellants have failed to provide sufficient evidence or
argument to persuade us the combination of Sai and Janevski fails to teach
or suggest controlling the display of a configuration table based on
configuration-table data related to the video content data. Therefore, we
sustain the rejections of claims 2-4 under 35 U.S.C. § 103(a) over Sai and
Janevski.
DECISION
The Examiner’s decision to reject claims 2-4 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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